The Hopkins & Dickinson Manufacturing Co. v. Corbin.

ventor of a combination is entitled to invoke the aid of equivalents, (Seymour v. Osborne, 11 Wall., 516,) but to simply assert, that, where an invention is merely a combination subordinate to pre-existing devices, and has been limited to such sub-combination by the language of the claim, the patentee cannot successfully insist that he is entitled to the pre-existing devices, and that this is true when one of the joint inventors of the junior invention is also the inventor of the senior inventions. Under this construction of the plaintiffs' reissue, the defendants do not infringe, inasmuch as they use a vertically moving bolt in combination with a socket upon the base plate.

It is insisted by the plaintiffs that Voll and McGregor are estopped to deny that they were the joint inventors of the patented invention. Neither of the joint inventors have made this denial. They have each denied that they were the joint inventors of the device which their assignees seek to have protected by the reissue, but which the inventors insist was simply an improvement of the sole and unpatented invention of one of them.

The testimony of Voll and McGregor is seriously criticised in connection with their alleged willingness to make oath, for a pecuniary consideration, to the application for a reissue, wherein the joint invention is stated so broadly as to include Voll's sole invention. I have not thought it necessary to pass upon this question of fact, as their present testimony is so corroborated by the exhibits in the case as to remove doubt in regard to the character of the sole and joint inventions.

ants.

Let a decree be entered dismissing the bill, with costs.

Charles F. Blake, for the plaintiffs.

Charles E. Mitchell and Orville H. Platt for the defend

VOL XIV.-26

Frese v. Biedenfeld.

J. C. FRESE & Co. vs. SHALBERG BIEDENFELD. IN EQUITY.

In a suit in equity, the proofs taken on the part of the defendant were not filed, because the examiner's fees had not been paid. The plaintiff moved for an order that such proofs be filed, and that an attachment issue against the defendant to compel payment of such fees: Held, that the motion must be denied.

(Before WHEELER, J., Southern District of New York, January 31st, 1878.)

WHEELER, J. This cause has been heard on the motion. of the complainant to have the defendant's proofs ordered to be filed, and for an attachment to compel payment of the examiner's fees. Equity rule 82 requires a master to file his report whether his fees are paid or not, and provides for an attachment to compel payment. There is no rule requiring an examiner to file testimony taken by him, without payment of his fees. Doubtless he has a lien as against the party for whom testimony is taken, upon the testimony, for his fees; and, in addition to that remedy, he may proceed by applica tion to the Court for an attachment to compel payment. (Cald well v. Jackson, 7 Cranch, 276.) The other party can have no greater, if as great, right to the testimony. In this case, the other party claims that the testimony shall be put on file, not for the purpose of establishing his case, but that it may be overruled as showing a defence. It is doubtful whether he has any right to the testimony for that purpose, but, if he has, it must be subordinate to the right of the examiner to have his fees first paid. To order the testimony filed without payment to the examiner would cut off one of his remedies, and it may be a very useful one. If the party who has caused the testi mony to be taken is willing or prefers to have his cause heard without it, the opposite party does not seem to have any just cause for complaint. If, however, he deems the testimony of sufficient value to him to be paid for by him, he may be enti tled to have it filed on making the payment. But that is not

Wooster v. Taylor.

his position on this motion. Here he asks to have it ordered on file without making payment, that it may be overruled as constituting a defence. That he does not appear to be enti tled to.

Arthur V. Briesen, for the plaintiff.

James L. Onderdonk, for the defendant.

Motion denied.

GEORGE H. WOOSTER

28.

EDMUND W. TAYLOR, JR. AND MARGARET WOODBURY.
IN EQUITY.

Where the profits made by a defendant from the unlawful use of a patented invention amount to more than the license fees for such use would amount to, the plaintiff, although exercising his monopoly by the granting of licenses, is entitled to recover such profits, on an accounting for profits, and is not limited to such license fees.

(Before WHEELER, J., Southern District of New York, February 15th, 1878.)

WHEELER, J. This cause has been heard on report and supplemental report of the master filed therein, exceptions thereto and argument of counsel. The reports show that the orator does not manufacture or sell his patented articles, but relies on license fees for his income from his patent; that such license fees, for the unlicensed use made by the defendants, paid at the beginning of each year, according to his rule, would amount to fourteen hundred dollars; that they were stopped soon after the commencement of the second year, by

Wooster v. Taylor.

an injunction issued in this cause, on motion of the orator; and that the profits actually realized by the defendants, from the use they had, amounted to nineteen hundred sixteen dollars and twenty-eight cents. Among other exceptions, the defendants have filed some that raise the question whether the orator is entitled to recover anything beyond the amount of what his license fees would have been; and, if not, whether those should not be apportioned to the time they were suffered to use the invention. No other exceptions, besides those raising these questions, are insisted upon.

If the defendants had yielded to the orator's claims, and taken and paid for the licenses, the profits realized would have been theirs, and the orator would have had no just claim upon them. As they did not, the use they had of the invention was not theirs, but was the orator's, and what they realized from it, by force of the law, became his, and was not their own. By the express provision of the statute on this subject, the plaintiff is "entitled to recover, in addition to the profits to be accounted for by the defendant," the damages sustained by the infringement. (Rev. Stats. U. S., sec. 4921.) This shows, that, in contemplation of law, the profits actually realized by the infringer belong to the patentee, and, that, when the profits would not compensate for the damages sustained, as they might not, in many cases, he is entitled to the damages beyond.

When it comes to the measure of damages, as distinguished from profits, in cases like this, the loss of the license fees might be the limit of the patentee's loss. But they are not, in any such case, the measure or limit of the infringer's gain. So, on many questions of damages strictly such, the license fees are evidence of damage, and, sometimes, the limit of recov ery of damages, but cannot be evidence, and, much more, not a limit, of profits to be accounted for.

If the question of damages beyond profits was reached, and of any importance, it may be that the stoppage of the use of the patent by the injunction would make an apportionment of the license fees lawful and proper. But, as the profits ex

Aborn v. Mason.

ceed the damages, in any mode of reckoning the license fees, it is not necessary to consider the question made in that respect. The exceptions are overruled, and the reports accepted and confirmed for the larger sum.

Frederic H. Betts, for the plaintiff.

James M. Townsend, for the defendants.

ROBERT W. ABORN AND OTHERS

28.

JOHN W. MASON, ASSIGNEE IN BANKRUPTCY OF LOUIS H. OBERHOFER.

A. delivered wool and yarn to O., to be made into cloth, at a specified cost, to be paid by A. The wool and the yarn and the goods were to be continuously the property of A. O. began the manufacture of goods from the materials. Thereafter, the property came into the possession of M., as the assignee in bankruptcy of O. At that time, it was in the condition of dyed wool, mixed with shoddy, and woolen yarns in the various stages of manufacture into cloth, and was of small market value, and not salable. A. demanded from M. the specific wool and yarn delivered to O., and the yarns in process of manufacture, and offered to pay all charges on them, if informed of the amount. M. completed the manufacture of the goods, and expended $800 in finishing them, and sold them for $3,193 50. A. sued M. in trover, for the conversion of the wool and yarns and goods: Held, that it was not necessary for A. to prove

an actual tender of an amount sufficient to cover the value of the work and materials supplied by O., but that the offer made to pay the charges was sufficient.

Held, also, that A. was entitled to recover the avails of the goods, less the cost of the materials furnished by O. and by M., and the expense of manufacture. (Before SHIPMAN, J., Southern District of New York, February 23d, 1878.)

SHIPMAN, J. On or about May 6th, 1871, the plaintiffs were the owners of a quantity of superfine wool and of inferior wool and of double and twist yarn upon spools, of the value of $1,737 69, and delivered the same to Louis H.